October 31, 2013

Société Des Produits Nestlé S.A. v Cadbury UK Limited [2013] EWCA Civ 1174

Background

This case was an appeal from a first instance decision of His Honour Judge Birss QC, sitting in the High Court, which we reported in IP Forum (Issue 91: December 2012) last year.

In 2004 Cadbury applied to register a UK trade mark for a specific shade of purple, shown as a block of purple colour and characterised by the following description:

“The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.”

Nestlé opposed the registration before the UK IPO, however the Registrar of Trade Marks decided to allow the mark to proceed to registration. Nestlé subsequently appealed this decision to the High Court where HHJ Birss QC held, following the judgment of the Court of Justice of the European Union (“CJEU”) in Libertel Groep B.V. v Benelux-Merkenbureau (Case C-104/01), that colours per se were capable of registration. Further, the judge held that it was an inherent characteristic of colour marks that they could be used in a variety of ways and the use of the word “predominant” in the description did not mean that the mark covered a multitude of marks nor did it render the mark unacceptably vague.

Nestlé were granted permission to appeal to the Court of Appeal on two grounds: (i) that the colour mark described in the application was not a ‘sign’, and (ii) it was not capable of being represented graphically.

First Instance Decision

Before HHJ Birss QC Nestlé had appealed the decision of the Registrar of Trade Marks to allow Cadbury’s application to register the colour purple to proceed to registration, on the basis that the mark applied for fell foul of the CJEU’s decision in Dyson v Registrar of Trade Marks (Case C-321/03). The mark applied for in Dyson was found to cover all conceivable shapes of the goods in question and so did not satisfy the requirement of specificity set out in the CJEU’s judgment in Sieckmann v Deutsches Patent und Markenamt (Case C-273/00). Nestlé argued that the mark applied for by Cadbury also covered a multitude of visual forms and so was not a sign capable of being represented graphically as required pursuant to Articles 2 and 3 of the Trade Marks Directive 2008/95/EC.

HHJ Birss QC dismissed Nestlé’s argument that the mark was not a ‘sign’ on the basis that Libertel establishes, as a matter of principle, that colour marks are capable of registration provided that they are properly identified in words and with an internationally recognised identification code. The Court acknowledged that a pure colour mark is capable of being used in a variety of ways but that this is true of all pure colour marks and, since the CJEU had found them to be registrable, it had implicitly accepted this.

Nestlé’s argument that the description of the mark encompassed multiple visual forms had three limbs: (i) the alternates suggested by “whole” or “predominant”, (ii) the subjectivity of the word “predominant”, and (iii) the fact that if the colour mark was only a predominant, there necessarily must be another colour, meaning the mark is in fact a colour combination.

The judge dismissed Nestlé’s first argument on the basis that “whole” was simply an extreme example of “predominant” and so they cannot be thought of as alternatives. Nestlé’s second argument was dismissed because, although how the colour mark would be applied to the packaging and over what percentage of packaging was uncertain from the description, this would also be the case absent the description. This uncertainty was inherent in all colour marks and did not render the description of the mark too vague. The judge also dismissed Nestlé’s third argument as any other materials on the packaging do not form part of sign applied for and therefore it should not be regarded as a colour combination. Nestlé appealed.

Appeal

Nestlé’s grounds of appeal were that the judge made errors of principle when deciding that the mark was a ‘sign’ and was capable of being represented graphically. As the registration of trade marks confers a potentially perpetual monopoly in the mark and excludes others from using the mark, the appeal raised points of some public importance.

Sir John Mummery gave the lead judgment in the Court of Appeal, finding that both the Registrar of Trade Marks and HHJ Birss QC had erred on a point of principle.  Sir Mummery held that the verbal description which forms part of the graphic representation of the mark had been misinterpreted. The Court of Appeal held that the formulation “whole” or “predominant” provided alternative forms of the mark, that the word “predominant” encompasses a multitude of different visual forms due to the implicit reference to other colours or materials not described in the mark. The finding that the mark encompasses a multitude of visual forms means that it is not a ‘sign’ which is ‘graphically represented’ within the meaning of Article 2. The Court of Appeal went on to say that the inclusion of the word ‘predominant’ prevents the mark from complying with the requirements for it to be ‘specific, certain, self-contained and precise’. Further, it does not respect the principles of certainty or fairness as it would give an unwarranted competitive advantage to Cadbury.

Sir Timothy Lloyd concurred with Sir Mummery and added that the use of this formulation may require review given the formulation used for the description in the present case was included in guidance issued by the UK IPO and also given the presence of other marks on the register with the same formulation.

Comment

Although this case does not displace the principle of Libertel that pure colour marks are capable of registration, it highlights the care with which such marks must be represented graphically to avoid a finding of uncertainty of scope. In particular, the inclusion of any description of the use of the colour mark will be considered to delineate its scope. The presence of other marks on the register which use the formula which was the subject of this appeal is unsurprising since it was included in the guidance issued by UK IPO, however this case raises question marks over the validity of any such marks should they be subject to challenge in future.

This case was heard as a joint appeal with J.W. Spear & Son Limited v Zynga Inc. [2013] EWCA Civ 1175 which concerned a three dimensional trade mark for a Scrabble tile. In a separate judgment handed down on the same day, the Court of Appeal applied its reasoning in Nestlé and came to the conclusion that the Scrabble tile mark was not ‘a sign’ and that it was not graphically represented so as to achieve the requirements for clarity, precision and objectivity as required by Article 2 of the Trade Mark Directive 2008/95/EC.

Published with minor alterations in Intellectual Property Forum, Issue 95, November 2013